The CTM system has been in force for 20 years and over the years it has proven to be a very successful system. Part of the reason behind the success is most likely the possibility of securing trademark rights in a vast geographical area covering to date 28 EU member countries at a very low cost.
However, the CTM system is going to change radically in the near future, starting from 23 March 2016.
The main changes to the system are as follows:
1. Change of name
Community Trade Mark (CTM) will be renamed to The European Union Trade Mark (EUTM) and OHIM will be renamed to The European Union Intellectual Property Office (EUIPO).
2. Change in fees – filing and renewal
Many applications have been filed including 3 classes, probably because the basic fee included 3 classes, but this may change in the future, since it is now possible to file an application in only 1 class.
The new filing fees are as stated below and the final filing fee will now depend on the number of classes in the application:
|Classes||New online filing fee EUR||Old online filing fee EUR|
It is worth noting that there is a slight saving for those only filing in 1 and 2 classes (oppose to the old basic fee including 3 classes), and there is a slight increase for those filing in 3 classes.
Regarding the renewals, there can also be some interesting savings due to the possibilities of dividing the classes into separate classes.
Payment of renewal fee, old or new, depends on the renewal date for each registration. If the renewal date is 23 March 2016 or later, the renewal fee is calculated based on the new fees.
|Classes||New online renewal fee EUR||Old online renewal fee EUR|
- Priority claim must now be included at the time of filing, thus the 2-month period for claiming priority after filing the application is no longer available.
- The applicant has to request a search report performed in OHIM’s/EUIPO’s registry at the time of filing. This search report is free of charge. The search will still be made by The Office regardless of whether the applicant requests a search or not and the proprietors mentioned in the report will still be informed.
- There are no changes concerning searches in national registers, thus the applicant still has to pay a fee for search per country.
- Moreover, the requirement for a trademark to be “graphical represented” has been abolished. The only requirement is that the mark must be clear for the public and authorities to determine the subject matter.
- Class headings will only cover the literal meaning of the words and not all goods included in the International classes. This is good news, as it gives more clarity than before. However, this new practice makes it important for applicants to mention the goods or services of core interest in the applications and they cannot rely on an interpretation of the goods being covered by a “class heading”.
- Owners of applications filed before 22 June 2012, and where the applicant has used the class heading, are allowed to file a declaration mentioning the specific goods of interest in the chosen class if the wording falls within the Nice Classification. The deadline to file such a request before OHIM/EUIPO expires September 24, 2016.
- Opposition can be based on a protected Designation of Origin or Geographical Indication.
- The opposition deadline for EU designations of International Registrations will change. The opposition period will continue to be 3 months after publication, however, OHIM/EUIPO will publish the designation of the EU within one month from the date of notification. Today the opposition period begins 6 months after publication of the designation.
- In addition, the 5 years proof of use of an earlier mark will now be counted from the date of filing of the opposed mark or the priority date of same and not the publication date of the application.
The changes to the CTM/EUTM system will come into force on March 23, 2016
Further harmonization at EU member state level:
- 20 years after the introduction of the CTM system, the national laws are still not fully harmonized. One example is the possibility of asking for an administrative revocation before national IP Offices. The EU member states are now given a 3-year term to implement the majority of changes, however, a term of 5 years are given to establish the system for administrative revocation actions.
It will be our pleasure to assist you with your filings of new EUTM marks, so please do not hesitate to contact us.